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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Novartis AG [2011] APO 97

Patent Application: 2009250982

Title:Combination of a DPP IV inhibitor and a cardiovascular compound

Patent Applicant: Novartis AG

Delegate: E J Knock

Decision Date: 23 November 2011

Catchwords: PATENTS – examiner objection – case management of divisional applications – no response by applicant – application refused

Representation: Patent applicant: Mathew Lucas, Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009250982

Title:Combination of a DPP IV inhibitor and a cardiovascular compound

Patent Applicant: Novartis AG

Date of Decision: 23 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009250982 was filed by Novartis AG as a divisional of application 2007203210 on 16 December 2009. An examination report issued on 15 July 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 and 2 of my report are based on the same grounds objected to in the examination of patent application AU 2007203210 and grandparent application AU 2003242593. Please note that if a response overcoming this objection is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If you intend to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above."

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 15 July 2011 raised an objection(s) equivalent to that in the parent application. In line with our approach to case management of divisionals, you were given two months to respond to that report. As no response has been received, the matter will now be set for hearing.
I believe that it is possible to hear this matter on the basis of written submissions, so I allow you one (1) month from the date of this letter to file any submissions you wish. Your submissions should address the ground(s) of objection identified in the examination report. Once your submissions have been received, or alternatively if no submissions are received, the matter will be passed to a hearing officer to issue a written decision. Please note that it is possible for the Commissioner to refuse the application or direct amendment.
Alternatively, if you file amendments overcoming the objection(s) within this period, the Commissioner will not proceed with the hearing. However, if the amendments do not fully overcome the objection(s), you will be advised of this fact and the hearing may continue as above."

The applicant has not provided any submissions.

The objection

I have reviewed the examiner's report, and I agree that there are appropriately raised objections. The applicant has chosen not to defend the application. They have provided no submissions disputing the objections, and have not proposed any amendment to attempt to overcome the objections. In these circumstances there are no reasonable prospects of the applicant overcoming the objections. The application should be refused.

E J Knock
Delegate of the Commissioner of Patents

CaseChat Overview and Summary

The applicant, Novartis AG, filed a patent application in relation to a combination of a DPP IV inhibitor and a cardiovascular compound. The application was a divisional of an earlier application. The Commissioner of Patents issued an examination report, raising objections to the application. No response was provided by the applicant, and the matter proceeded to a hearing. The delegate of the Commissioner of Patents was required to decide whether the application should be refused or if there were reasonable prospects of the applicant overcoming the objections. The delegate reviewed the examination report and found that the objections were appropriately raised. The applicant had not provided any submissions or proposed any amendments to overcome the objections. In these circumstances, the delegate found that there were no reasonable prospects of the applicant overcoming the objections and decided to refuse the application.

The legal issues before the delegate were whether the objections raised in the examination report were appropriately raised and whether there were reasonable prospects of the applicant overcoming the objections. The delegate found that the objections were appropriately raised and that there were no reasonable prospects of the applicant overcoming the objections. The delegate relied on the Commissioner's approach to case management of divisional applications, which provides that if a response overcoming the objection is not filed within two months of the date of the examination report, the Commissioner will consider whether to direct amendment of the application or proceed to refuse the application. The delegate noted that the applicant had not provided any submissions or proposed any amendments to overcome the objections, and therefore, there were no reasonable prospects of the applicant overcoming the objections.

In summary, the delegate refused the patent application as the applicant had not provided any submissions or proposed any amendments to overcome the objections raised in the examination report. The delegate found that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused. The decision is in line with the Commissioner's approach to case management of divisional applications, which provides that if a response overcoming the objection is not filed within two months of the date of the examination report, the Commissioner will consider whether to direct amendment of the application or proceed to refuse the application.

No further orders were made by the delegate. The decision stands as issued, and the application has been refused.

Novartis AG

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